Paul Lange & Co. OHG v. Barbara Lange-Behnke c/o Private Registration
Claim Number: FA0707001032019
Complainant is Paul Lange & Co. OHG (“Complainant”), represented by Lutz
Aye, of Gleiss Lutz Rechtsanwaelte, Maybachstrasse
6,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <paul-lange.org> and <paul-lange.info>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2007.
On July 13, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <paul-lange.org> and <paul-lange.info> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 16, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@paul-lange.org and postmaster@paul-lange.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a world-famous bicycle parts and equipment manufacturer.
Complainant has used the PAUL LANGE trademark in connection with its bicycle parts distributing business since December 8, 1950.
Complainant has over many years spent millions of Euros on advertising and promoting its bicycle parts and equipment business world-wide under its PAUL LANGE mark.
Complainant holds trademark registrations for its PAUL LANGE mark with the European Union's Office for Harmonization in the Internal Market ("OHIM") (Reg. No. 4,793,642, issued September 12, 2005).
Complainant also operates several websites under its PAUL LANGE mark, including one at the <paul-lange.com> domain name.
Respondent is neither licensed nor authorized to use Complainant’s PAUL LANGE mark in any way.
Respondent registered the <paul-lange.org> and <paul-lange.info> domain names on May 24, 2004.
Respondent’s domain names resolve to websites that display hyperlinks to various third-party websites, most of which are in direct competition with the business of Complainant.
Respondent’s <paul-lange.org> and <paul-lange.info> domain names are confusingly similar to Complainant’s PAUL LANGE mark.
Respondent does not have any rights to or legitimate interests in the <paul-lange.org> and <paul-lange.info> domain names.
Respondent registered and uses the <paul-lange.org> and <paul-lange.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) The same domain names have been registered and are being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Although Respondent registered the <paul-lange.org> and <paul-lange.info> domain names prior to Complainant’s registration of its PAUL LANGE mark with OHIM, the registration of a trademark is not required to establish rights under Policy ¶ 4(a)(i). It is possible for Complainant to establish its rights by showing secondary meaning sufficient to establish common law rights. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001):
The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.
In the instant case, Complainant has established common law rights in the PAUL LANGE mark due to its continuous and extensive use of the mark over a long period of years. Respondent does not contest this. Thus, we conclude that Complainant has sufficiently established its rights in the PAUL LANGE mark for purposes of the Policy. See Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that a complainant had common law rights in the mark FISHTECH that it has used since 1982); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <paul-lange.org> domain name is substantively identical to Complainant’s PAUL LANGE mark, inasmuch as it merely replaces the space between the terms with a hyphen, and adds the generic top-level domain “.org”. Respondent’s <paul-lange.info> domain name is likewise substantively identical to Complainant’s mark, in that it simply replaces the space between the terms with a hyphen, and adds the generic top-level domain “.info” onto the mark. The addition of generic top-level domains does nothing to alleviate the identity, as a top-level domain is required for all domain names. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003): “The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.” See also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to the complainant's EASYJET mark and therefore that they are confusingly similar). Thus, we conclude that the <paul-lange.org> and <paul-lange.info> domain names are identical to Complainant’s PAUL LANGE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the <paul-lange.org> and <paul-lange.info> domain names. Once Complainant establishes a prima facie case, the burden shifts to Respondent, who must prove that it has rights or legitimate interests in the disputed domain names. In the case before us, Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Because Respondent failed to respond to the Complaint, we are
entitled to and do presume that Respondent lacks all rights and legitimate
interests in the <paul-lange.org> and <paul-lange.info>
domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and a respondent did not come forward to suggest any right or interest it may have possessed). Nonetheless, we will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
In this connection, we first observe that Respondent’s WHOIS information does not indicate, and nothing in the record suggests, that Respondent is commonly known by the <paul-lange.org> and <paul-lange.info> domain names. Moreover, Complainant has offered evidence indicating that Respondent is neither licensed nor authorized to use Complainant’s PAUL LANGE mark in any way. Therefore, we conclude that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.” See also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).
We also note that it is undisputed on this record that Respondent’s
<paul-lange.org> and <paul-lange.info>
domain names resolve to websites which display a set of hyperlinks,
most of which are for direct competitors of Complainant’s business. We presume that Respondent gains commercially
from this website, in which event, such use does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercdial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s
diversionary use of a complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the
registrant presumably receives compensation for each misdirected Internet
user).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent is using the <paul-lange.org> and <paul-lange.info>
domain names in an attempt to attract Internet users to its
websites, presumably for commercial gain.
Respondent is thus capitalizing on the likelihood that users will
confuse the disputed domain names as being affiliated with Complainant and its
PAUL LANGE mark. This indicates that
Respondent registered and is using the <paul-lange.org> and <paul-lange.info>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003): “Although Complainant’s principal website
is <century21.com>, many Internet users are likely to use search engines
to find Complainant’s website, only to be misled to Respondent’s website at the
<century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.” See also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.
Thus, the Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <paul-lange.org> and <paul-lange.info> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 4, 2007
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